In a last minute move, a year after infringement assertions were due, months after discovery closed, and perhaps as little as weeks before this trial is to commence, Oracle now requests the court's leave to file a motion to amend its infringement contentions with respect to the '205 patent, supplement its expert infringement report, and introduce NEW evidence in support of this new infringement claim. (755 [PDF; Text]) All of this Oracle insists is perfectly kosher under the local patent rules and will not prejudice Google.

First of all, the claims of the '205 patent stand fully rejected by the USPTO in a final rejection issued February 16. Oracle has until March 19 to challenge that final rejection. If Oracle does not successfully challenge that rejection, the interpretation of the '205 patent is moot.

Second, Oracle states this is "not a case in which '[t]he risk of the construction rendered by the presiding judge was well known and anticipated by' the parties." Huh? The claim construction by the court, “during execution of one or more virtual machine instructions,” is virtually identical (and certainly within the scope) of what Google recommended, “during execution of the virtual machine instructions.” Now Oracle may not have anticipated that construction, but it is simply false to say that Google did not.

Third, the case Oracle cites (Asyst Techs., Inc. v. Emtrak, Inc.) as supporting its proposition that it is not too late to amend is in no way similar to the instant case. In Asyst the request to amend did not arise during the original trial, it came after the case had gone up on appeal and the appeals court had reconsidered the issue of claims construction de novo and remanded the case back to the trial court. Of course neither party anticipated that change by the appellate court, but that situation is a far cry from the instant case.

Fourth, Oracle states that allowing it to amend at this late stage will not delay the trial because, in anticipation of the possibility its motion would be granted, it has already served the proposed supplemental contentions and report on Google. However, if Oracle is to be allowed to introduce new evidence, Google will want an opportunity to impeach that evidence through additional discovery, and that is certain to delay the trial.

Finally, Oracle states that Google will not be prejudiced by all of this. That statement is simply unbelievable on its face. It is hard to see why the court should allow Oracle's motion at this late stage, particularly on a patent that may have no relevance whatsoever to the actual trial.

In other matters the court has issued two new orders. The first (753 [PDF; Text]) grants the request made by Google and not opposed by Oracle to allow the parties to supplement the parties' respective expert reports in light of the reexaminations by the USPTO.

In the second (754 [PDF; Text]) the court asks the parties to "include analysis of whether or not the copyrightability of the selection, arrangement, and structure of the APIs depend on the underlying programming language being Java as opposed to Python or QBASIC or other non-Java programming language" when submitting their respective briefs on copyright liability on March 9. Judge Alsup has admitted throughout this case that he is no technical expert, so he should be forgiven this request.

ORDER ALLOWING EXPERTS
TO ADDRESS FINAL
REEXAMINATIONS IN
SUPPLEMENTAL REPORTS

____________________________________

Google requests leave to supplement the parties’ expert reports to discuss the
reexaminations where the examiners have issued final rejections and actions closing prosecution
with all claims rejected. Oracle does not oppose and requests leave to respond with its own
supplemental reports to address any new opinions. The parties’ requests are GRANTED. New
opinions must be limited to the reexamination proceedings, such as the materials considered by
the examiner and decisions.

IT IS SO ORDERED.

Dated: February 29, 2012.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

754

FOR THE NORTHERN DISTRICT OF CALIFORNIA

ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

No. C 10-03561 WHA

ORDER REQUESTING
DISCUSSION IN
COPYRIGHT BRIEFS

_____________________________________

In the copyright-liability briefs due on March 9, please include analysis of whether or not
the copyrightability of the selection, arrangement, and structure of the APIs depend on the
underlying programming language being Java as opposed to Python or QBASIC or other non-
Java programming language.

IT IS SO ORDERED.

Dated: February 29, 2012.

/u/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

755

[Morrison & Foerster letterhead]

February 29, 2012

Hon. William Alsup
United States District Court, Northern District of California
[address]

Re: Oracle America, Inc. v. Google, Inc., Case No. 3:10-cv-03561-WHA

Dear Judge Alsup:

Oracle respectfully requests leave to file a motion pursuant to Patent L.R. 3-6 to amend its infringement contentions and supplement its infringement report regarding Google's infringement of U.S. Pat. No. 6,910,205. The Court recently construed "at runtime" to mean "during execution of one or more virtual machine instructions." (Dkt. No. 704 at 9.) The phrase appears in the claim limitation "generating, at runtime, a new virtual machine instruction that represents or references one or more native instructions that can be executed instead of said first virtual machine instruction." No changes to Oracle's previously disclosed two theories of infringement are intended: Oracle seeks leave for Prof. Mitchell to supplement his patent infringement report to identify additional evidence that the accused Android software generates new virtual machine instructions during execution of one or more virtual machine instructions, according to the Court's claim construction.

Amendment of infringement contentions "may be made only by order of the Court upon a timely showing of good cause." Pat. L.R. 3-6. One circumstance that "may, absent undue prejudice to the non-moving party, support a finding of good cause" is "a claim construction by the Court different from that proposed by the party seeking amendment." Id.

Hon. William Alsup
February 19, 2012
Page Two

The Federal Circuit has recognized that claim construction can justify significant changes to litigants' contentions, even late in litigation:

As a procedural matter, Asyst argues that the trial court abused its discretion by allowing Jenoptik to "assert new invalidity theories nearly ten years into the lawsuit." In particular, Asyst complains that the court should not have allowed Jenoptik to assert its invalidity defense based on Hesser at this stage of the litigation. Asyst argues that the delay was prejudicial because it had limited time to depose Jenoptik's expert regarding Hesser and because it could not amend its complaint to assert different claims based on the expert's report regarding Hesser. Jenoptik counters that on the second appeal this court "expanded the claim scope" and that "new prior art became potentially relevant to the validity of those claims." See Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1357 (Fed. Cir. 1998).

We hold that the district court did not abuse its discretion in concluding that the change in claim construction resulting from this court's decision on appeal "changed the rules of the game," CellPro, 152 F.3d at 1357, and that Jenoptik was therefore properly permitted to amend its defenses. Asyst has not made a sufficient showing to warrant reversal on this issue of case management, on which district courts enjoy broad discretion.

Similarly, in the present case, there is good cause to amend because the Court's construction of "at runtime" gives the asserted claims of the '205 patent a different scope than they would have had under either party's proposal. This is not a case in which "[t]he risk of the construction rendered by the presiding judge was well known and anticipated by" the parties. Sunpower Corp. Sys. v. Sunlink Corp., No. C-08-2807 SBA (EMC), 2009 U.S. Dist. LEXIS 85425, at *3-6 (N.D. Cal. June 12, 2009) (rejecting argument to amend on claim construction grounds but allowing amendment upon showing of diligence).

Hon. William Alsup
February 29, 2012
Page Three

The truth-seeking function of the upcoming trial would benefit from infringement testimony tailored to the claims as presently construed. Prof. Mitchell's proposed supplementation, which concerns only one of Oracle's two disclosed infringement theories (the "inline" theory), identifies particular virtual machine instructions (e.g., in Android's PackageManagerService and Installer classes) that are executing when Android's dexopt tool generates new virtual machine instructions (e.g., through a call to optimizeMethod()), as was already explained in Oracle's infringement contentions and Prof. Mitchell's reports. No change is proposed for the second infringement theory (the "JIT" theory).

Google will suffer no undue prejudice from Oracle's proposed amendment. The focus of Oracle's infringement claim is not changing: the proposed supplementation is limited to additional evidence that further identifies what is happening when Android generates new virtual machine instructions. The Court should give Google's non-infringement expert leave to submit a responsive report, on reciprocal terms. Nor will Oracle's proposal delay trial. Oracle's proposed supplemental contentions and report have already been served on Google, so Google could respond with its own contentions and report before the end of March, and the case would still be ready for an April trial.

Oracle submits that its proposal will allow each side to best tailor the presentation of evidence regarding infringement of the '205 patent to the Court's construction, which will improve jury comprehension of these technical issues.